USPTO Patents Application 10651824

FEB-05-07 04:32PM FROM-StoutUxaBuyanMul I ins

+949-450-1 T64

T-122 P. 007/009 F-073

Expedited Processing
Application No. 10/651,824
Amd. Dat^:

Reply 10 Final Office Action mailed Deceinber 5, 2006

RECEIVED
CENTF^AL FAX CENTER

FEB 0 5 2007

REMARKS/ARGUMENTS

Entry of this amendment and reconsideration of the grounds for rejection stated in
the final Office Action are respectfully requested. The only amendment made is
changing of the words **penetrating member" to -catheter— in claim L Also, claim 15
has been cancelled- No new matter has been added. Specific support for this amendment
is found in the specification, including the sentence set forth at page 17, line 27. This
simple amendment does not raise any new issues and will not necessitate further
searching. Furthermore, by cancellation of claim 15, this amendment reduces the number
of claims to be considered on appeal. Additionally, as explained blow, this amendment
places the claims in condition for allowance. Thus, entry of this amendment on an "after
final'' basis is pr«>per.

In the final Office Action claims 1-20 were rejected as being anticipated by
United States Patent No. 5,499,995 (Teirstein). In support of this rejection, the final
Office Action states that the lumen blocking portion (36) of the Teirstein device is
penetrable by advancement of a penetrating member (20) through the lumen blocking
portion (36) while the device is implanted within a body Itmien, These statements are
simply incorrect. In reality, Teirstein contains no disclosure or suggestion of any
penetrating member penetrating through any portion of his device. Rather, Tierstein
describes some over-the wire embodiments of his device which have guidewire lumens
extending through the device and a "guidewire port 44" formed in the **se£ding membrane
36.** Teirstein's item 20 is not a penetrating member. It is a ^idewire over which those
over-the-wire embodiments of his device may be advanced. After the device is implanted
in the body lumen, the guidewire 20 is removed. Teirsten provides no teaching or
suggestion as to the use of this guidewire 20 (or of any other object) for the purpose of
penetrating through the sealing member 36 after the device has been implanted in a body
lumen. Nor does Teirstein even mention or recognize the desirability of being able to re-

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FEB-05-Or 04:32PM FROIi/hStoutUxaBuyanMul I ins

+949-450-1764

T-122 P. 008/009 F-0r3

Expedited Processing
Application No, lQ/65 1.824
Amd. D$i^:

Reply to Final Office Action mailed December 5, 2006

RECEIVED
CENTRAL FAX CENTER

FEB 0 5 2007

penetrate through the sealing member 36 after the device has been implanted in a body
lumen.

In Teirstein's described embodiments, remnants of the catheter body 62. 54 or
delivery wire 20' and/or a check valve 56 and/or portions of a wire frame 42 are present
on the ends of the device after it has been is implanted. These items are clearly not
designed to be penetrated in situ and Teirstein makes no mention or suggestion as to how
or why one would endeavor to penetrate thxough these portions of the device after the
device has been implanted

By the foregoing amendment, the language of independent claim 1 has been
clarijfied to state that the himen blocking portion if the claimed device is penetrable in situ
by advancement of a catheter through the lumen blocking portion while the device is
implanted within the body lumen. Not only does Teirstein not describe any in situ
penetration of his device, person of skill in the art would clearly perceive the described
embodiments of the Teirsten device as not being constructed in a manner that would
allow diem to be penetrated in situ by an advancing catheter.

Conclusion

For the foregoing reasons, Applicant believes all the pending claims are in
condition for allowance and should be passed to issue. No fee is seen to be due in
connection with this filing. However, the Commissioner is hereby authorized to charge
any fee which may properly be deemed to be due in connection widi this filing from
Dq>osit Account No, 50-0878. If the Examiner feels that a telephone conference would

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' ' FEB-05-07 04:33PM FROM-StoutUxaBuyanMul I Ins

+949-450-1764

T-122 P. 009/009 F-

Expedited Processing
Application No. 10/651,824
Axnd. Dated:

Reply to Final Office Action mailed December 5, 2006

in any way expedite the prosecution of the application, please do not hesitate to call the
undersigned at telephone (949)450-1750.

frtfiilly-STjbmitted,

Robert D- Buyan
Registration No. 32,460
Attorney for Applicant

STOUT, UXA, BUYAN & MULUNS, LLP
4 Venture, Suite 300
Irvine, CA 92618
Telephone: (949)450-1750
Facsimile: (949)450-1764

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